Chile

The Pisco War in Peru

By Maria Sol Porro, Trademark Lawyer

A Chilean proposal has once again brought back the battle of Peru against Chile to recognize pisco as a national drink of one of these two countries. The aforementioned proposal came from the Chilean Minister of Agriculture, Antonio Walker, who proposed in mid-February that both countries reach an agreement to complement each other in order to obtain that their corresponding liquor is recognized as ¨pisco¨ in each country.

Although the Chilean Minister of Agriculture said that during a recent visit to Lima he proposed to his Peruvian counterpart, Gustavo Mostajo, a formula to put an end to the dispute between both countries regarding the denomination of origin of the alcoholic beverage, by complementing and recognizing the ip right of both of them over the aforementioned denomination in the international markets, the Peruvian Minister of Culture, Rogers Valencia, said that it is not possible that within the Peruvian legislation “the Chilean liquor is considered pisco”, highlighting that the right of denomination of origin is related to a geographical space, to a specific process and that, in addition, pisco is made with a specific variety of “grape”.

In this sense, the pisco war not only transcended borders, but also continents. On the Peru side, according to Indecopi (Office of the National Institute for the Defense of Competition and the Protection of Intellectual Property), 71 countries recognize the Peruvian right over the denomination of origin over pisco, such as India, Thailand, Ukraine, South Africa, Bolivia, Guatemala and Colombia, among others. Also, the Peruvian institute added that Chile “improperly modified” the name of a region of its territory (Pisco Elqui) in order to appropriate the term, an argument that is widely rejected by the neighboring country. As for Chile, it was explained that there are only four countries that recognize the appellation of origin of pisco as exclusively Chilean, which are Australia, Brunei, New Zealand and Turkey.

On the other hand, both countries prevent in their respective territories that the pisco of the opposite retains that name when they enter their corresponding markets, trying to enforce, in this way, the exercise of the rights that they understand the denomination of origin grants to them. Clearly, the last word in this historic dispute over the original ownership of this grape-based drink, of which the international community will continue to be a spectator, has not yet been said.

Source:  elcomercio.pe

Chilean PTO’s consolidation as PCT ISA/IPEA

By Marta Garcia

Since October 2014, the Chilean National Institute of Industrial Property (INAPI) has been working as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for patent applications filed under the Patent Cooperation Treaty (PCT).

Additionally, since January 1, 2018, INAPI can also issue international search reports and international preliminary patentability reports both in Spanish and English.

The following 12 Latin American and Caribbean countries have designated the INAPI as PCT ISA/IPEA: Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador, Guatemala, Mexico, Panama, Peru, Dominican Republic and Trinidad and Tobago.

During 2018, 380 applicants — half of which were non-Chilean applicants — designated the INAPI as ISA. This shows an increase of 45% over 2017.  Almost half of the patent applications designating INAPI as ISA since 2014 have been in the mechanical field.

Chilean PTO’s consolidation as PCT ISA/IPEA

In its role as ISA/IPEA, INAPI performed 304 international search reports and written opinions in 2018.

In its role as PCT Receiving Office (RO), during 2018 INAPI received 202 applications, 43% more than in 2017.

Currently, there are 22 Patent Offices worldwide working as PCT ISA/IPEA. In Latin America, the Chilean INAPI and the Brazilian National Institute of Industrial Property (INPI), are the two only Patent Offices to have been designated as PCT ISA/IPEA.

Source: https://www.inapi.cl

Chilean IP Office Named Second most Innovative PTO in the World

by Marta García

The National Institute of Industrial Property of Chile (INAPI) has ranked as the second most innovative Intellectual Property (IP) office in the world, according to the World Trademark Review (WTR), the world’s only independent daily news and information service dedicated exclusively to reporting on trademark issues internationally.

The IP Office Innovation Ranking is WTR´s annual project to recognize the IP offices around the world that are “committed to exploring value-add non-core offerings for users” with “boundary-pushing tools and services”.

In the third edition of WTR’s annual IP Office Innovation Ranking study, the EU Intellectual Property Office (EUIPO) has reached the top position for the third time in a row. Chile, which has achieved the top position in America, has shared second place with Spain and Singapore.

Over 100 IP professionals were contacted by WTR worldwide and invited to share their insights on the non-core services from their local IP offices.

The 2019 IP Office Innovation Ranking studied 50 of the leading trademark offices from around the world, examining three areas in particular detail: value-added propositions, online capabilities, and public outreach efforts.

WTR described INAPI, which was also among the 10 top IP offices in its inaugural study in 2017 as an agency that “is doing enough beyond maintaining a trademark register.”

Among the best-rated aspects of INAPI were the accessibility and quality of the trademark searching and processing tools available on its website.

“We have made an effort to improve our systems, so that online processing is our users’ first choice. Currently, 89% of trademark applications are filed through our website, which requires us to maintain a high standard of quality and efficiency in our processes,” said Mr. Esteban Figueroa, National Director of INAPI, commenting on the achievement.

In addition, the study emphasized INAPI´s efforts on public outreach, among which IP learning tools and the use of social media for reaching new audiences to stand out.

Regarding value-added propositions, WTR highlighted INAPI’s initiatives on technical advice and support to local entrepreneurs on IP matters.

In April last year, INAPI inaugurated its Technology and Innovation Support Center (CATI), backed by the World Intellectual Property Organization (WIPO), which provides entrepreneurs with IP search tools and assistance/training regarding technological information, database search, specific searches (e.g., novelty, prior art and infractions) and technology analysis.

Source:   https://www.inapi.cl

                https://www.worldtrademarkreview.com

Youtuber vs. CNN

By Maria Sol Porro

Since YouTube appeared in the virtual world in 2005, the ways of creating and sharing content through networks changed forever. Although initially users mostly used this platform to upload contents created by third parties without authorization, in a large percentage of cases¹, many of these same users later began to create their own contents and upload them in their channels, being the same baptized as ¨youtubers¨.

Over the months (yes, only months thanks to the immediacy of the networks), many of them began to become famous, both in their countries, and internationally, being their content shared and / or used by traditional media of communication such as radio or television. Added to this, the most popular ¨youtubers¨ began to generate high economic income thanks to the level of visits and subscriptions received in their channels, converting a simple hobby into a well-remunerated economic activity. In this way, new conflicts were raised in the ¨youtube¨ world, but this time not on the contents created external to the platform, but rather on the contents created on the same platform through the ¨youtubers¨, in relation to their author’s rights and the power derived from them in authorizing the uses of their creations.

The most recent conflict took place between a famous Mexican ¨youtuber¨ known as Luisito Comunica (his real name is Luis Arturo Villar Sudek) and the CNN Chile Television Network. It all started when the ¨youtuber¨ was invited to a CNN Chile program, where he talked about his career and in which fragments of his videos were presented for illustrative purposes. Subsequently, the ¨youtuber¨ received emails mentioning that CNN Chile was claiming ownership of some of its videos (the images that would supposedly have author rights in favor of CNN were about the same “youtuber” speaking to the camera or balloon clippings flying through Turkey), so that such content stopped being monetized by its videos portal, corresponding to CNN Chile to charge them. The paradox of this conflict is that these videos were originally published by the ¨youtuber¨, but then CNN Chile made its copyright to claim him.

After this claim, and making use of virtual resources, the famous ¨youtuber¨ recorded a video called “I will not let them steal me like this”, in which he denounces CNN CHILE for wanting to benefit economically from videos of his authorship. As the ¨youtube¨ world has its own rules, it was thanks to the viralization of this video that the conflict did not happen to legal instances, but the company CNN Chile quickly offered a public apology to the Mexican ¨youtuber¨ for the inconvenience caused. However, we must clarify that the statement did not indicate if CNN will compensate him for the loss in his income in his youtube portal, which already has more than 19 million subscribers, or if there is a contact with YouTube for the pair of videos claimed by copyright to return to be monetarized by the young ¨influencer¨ as appropriate.

Although this conflict was not brought to justice, it is important to highlight the significant precedent that it sets, since through the use of a virtual platform a private person was able to defend his or her author rights in front of a large communication company such as CNN. Is it then that the world as we know it so far is changing in a viral way? Only the virtual short term will tell.

1^ This issue developes new copyright conflicts on the web, among the holders of rights to these contents with these youtube´s users, which has been tried to resolve through different Intellectual Property programs, such as the Content ID.

Source: https://gossipvzla.com/

Changes introduced in patents and designs by Chilean Draft IP Law

by Marta García

On October 2, 2018, a new draft law was sent to the Chilean Congress to update the Law No. 19,039 on Industrial Property, the Law No. 20,254, which establishes the National Institute of Industrial Property and the Criminal Procedure Code.

The main changes introduced by the draft law regarding patents and industrial designs are the following:

Patents

• Provisional patents

The draft law includes the possibility of applying for provisional patent applications, which will provide applicants with a term of 12 months to proceed with the filing of the corresponding definitive application.

• Fees for additional pages

The draft law establishes that any patent application exceeding 50 pages must pay, together with the filing fee, an additional fee of 1 Monthly Tax Unit – which at the end of 2018 was equivalent to approximately 71.5 USD – for every 20 additional pages or fractions of pages.

• Limitation of supplementary protection

According to Article 53 BIS of Law 19,039, any patent (in any technical field) can be eligible for supplementary protection, provided that:

– the grant of the patent exceeded five years from filing or three years from the request for examination, whichever occurs after; or

– the grant of the marketing authorization exceeded one year since the request was filed.

It is also established that the supplementary protection must be requested within six months after patent grant or after marketing authorization grant, as long as there has been an unjustified administrative delay.

The current legislation states that only the period proven as unjustified will be granted and does not establish a maximum extension that can be granted.

The draft law establishes a reduction from the current six months to 60 days from patent grant or from marketing authorization grant to request the supplementary protection.

Moreover, the draft law limits the supplementary protection that can be granted to a maximum term of five years.

• Exceptions to patent rights

A series of exceptions or limitations to the rights granted by a patent to its owner are introduced by the draft law to Article 49 of IP Law No. 19,039, stating that the rights conferred by a patent will not be extended to:

1. a) Acts performed privately and without commercial reasons.
2. b) Acts performed exclusively for experimental reasons relative to the object of the patent.
3. c) Preparation of medicines under medical prescription for individual cases.
4. d) Use on foreign vessels of means which are the object of the patent, when they temporarily or accidentally enter into Chilean territorial waters, except that said means are used exclusively for the needs of the vessel.
5. e) Use of means that are the object of the patent in the construction or functioning of foreign air or land vehicles or of the accessories of said vehicles, when they temporarily or accidentally enter into Chilean territorial waters.

• Patent usurpation

According to IP Law 19,039, if a patent has been registered by a person who does not have the right to do so, the only remedy available for the legitimate owners of said invention is to request the revocation of said patent. Therefore, the legitimate owners of the invention do not currently have the option to recover their patent right.

In order to overcome said deficiency, the draft law proposes to establish a “patent usurpation act,” according to which the legitimate owner of a patent will have the right to request the transfer of the patent and the corresponding damages, when said patent has been registered by a person who does not have the right to do so.

Industrial designs

• Expedited procedure

The current registration process for industrial designs in Chile requires substantial examination and takes about one year, which is an excessively long term due to the dynamic nature of the design industry.

In order to accelerate registration, the draft law introduces an “expedited procedure”, which must be explicitly requested by the applicant, and which does not involve a novelty assessment. Moreover, the current non-expedited procedure involving a novelty assessment may still be used by the applicants.

In the new expedited procedure, if no formal objections are raised, the applicant will be granted a “certificate of deposit”. The substantive examination can still be requested at a later stage by either the certificate owner or a third party.

• Extension of term of protection

The current IP law establishes a maximum term of protection for industrial designs of 10 years, which cannot be extended.

The draft law proposes a protection period of five years, which can be extended for two additional periods of five years, until a maximum of 15 years.

It is also established that the owners of designs granted before the entry into force of the new law, which are still within the validity term of 10 years, my request an extension of validity for up to an additional term of five years.

Maintenance fees

According to the current IP Law 19,039, maintenance fees for patents, utility models and industrial designs must be paid for periods of 5 or 10 years. This means that patent and design owners have to pay a fee covering a long period of time, during which they might lose interest in the corresponding right.

In order to improve the above situation, the draft law introduces the option of paying annual maintenance fees for patent and industrial designs.

Source: https://www.camara.cl

WARNING: Your tattoo may be infringing an IP right!

By María Sol Porro

The Chilean national football team player, Arturo Vidal, is being sued by the “Hueso Santo” advertising agency because, according to their claim, one of the player’s tattoos is based on a logo they created.

For this reason, the above-mentioned advertising agency filed its complaint before the National Institute of Industrial Property (INAPI), alleging that the player, who has the tattoo on his neck, “would have inappropriately appropriated a design and a trademark that does not belong to him.” The company also said that it will also file a criminal complaint for infringement based on the Copyright Law, which establishes a fine amounting to a large sum.

The company explained that in May 2014 it created and registered the “AV” logo and the “King Arturo” brand, which were presented to Vidal’s representatives, Twenty Two, but no agreement was reached.  Hueso Santo’s lawyer, Felipe Schuster, indicated that “we will demonstrate the bad intentions of Vidal’s representatives and of the player himself when he took the logo that he did not own and used it.  The same logo from 2014, is a logo that was not created by him, but by one of my clients, without any type of authorization or prior license.”

The next step is to wait for the decision of the Chilean Trademark Office or the Chilean court. This case and the interesting grounds that may arise around it will be closely watched.  One thing is clear: When it comes to tattooing, people will now have to think twice what image or phrase to use as they could end up receiving a lawsuit.

Source: http://www.eldinamo.cl

PTO established as PCT ISA/IPEA

By Marta Garcia

Since October 2014, the Chilean National Institute of Industrial Property (INAPI) has been working as a competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for patent applications filed under the Patent Cooperation Treaty (PCT).

The following 12 Latin American and Caribbean countries have designated the INAPI as PCT ISA/IPEA: Chile, Colombia, Costa Rica, Cuba, Ecuador, El Salvador,Guatemala, Mexico, Panama, Peru, Dominican Republic and Trinidad and Tobago.

Since January 1, 2018, INAPI can also issue international search reports and international preliminary patentability reports both in Spanish and English, thus facilitating the designation of this office as PCT ISA/IPEA by Caribbean countries – such as Trinidad and Tobago – where English is the official language.

During 2017, 262 applicants –51% of which were non-Chilean applicants –designated the INAPI as ISA.This marks an increase of 19% over 2016, and 44% over 2015. Almost half of the patent applications designating INAPI as ISA since 2014 were in the mechanical field.

In its role as IPEA, INAPI received 19 patent applications in 2017 to perform an international preliminary patentability report, compared to the six applications received in 2016.

In its role as PCT Receiving Office (RO), during 2017 INAPI received 141 applications, 67% of which were filed electronically through its ePCT system.

Currently, there are 23 Patent Offices worldwide working as PCT ISA/IPEA. In Latin America, the Chilean INAPI and the Brazilian National Institute of Industrial Property (INPI), are the two only Patent Offices to have been designated as PCT ISA/IPEA.

Source: https://www.inapi.cl

New guidelines clarify divisional filings

By Marta Garcia

On November 2017, the Chilean PTO (INAPI) published an update of the patent examination guidelines providing clarifications regarding divisional applications.

The Regulations to the Chilean IP Law establish that an applicant may voluntarily divide his/her application into two or more divisional applications until the issuance of the first office action regarding substantive examination, provided that the divisional application(s) does not go beyond the scope of the parent application as originally filed.

After that time, divisional applications may only be filed at the Examiner’s request, when an observation due to lack of unity of invention is raised, and only while the parent application is still being prosecuted.

The updated text of the patent examination guidelines recently published by INAPI clarifies some issues related to divisional patent applications, mainly regarding the deadline to file, term and the due date for the payment of maintenance fees.

The following is a summary of the changes introduced by the guidelines:

1) The updated text clarifies that the filing of successive divisional applications has the limitation that a final resolution has not yet been issued for the parent application.

2) The guidelines also specify that, since the examination of a divisional application is performed separately from the parent application and retains its same priority date, the same rules for the parent application apply in order to determine the term and the due dates for the payment of maintenance fees.

3) It is specified that the due date for the payment of maintenance fees for divisional applications is calculated based on the filing of the parent application.

4) The new guidelines expressly state that in those cases where the parent patent obtains a patent term extension according to Art. 53 BIS of the IP Law, this extension will not be applicable to the divisional application(s) based on said parent application, since the unjustified administrative delay in the granting of a patent or its marketing authorization is specific for a patent.[1]

It is worth mentioning that the current Chilean IP Law does not establish any term of duration for divisional applications. Article 39 of the IP Law states that patents “shall be granted for a non-renewable period of 20 years counted from the filing date of the application,” without referring to the parent application.

The above has caused that, in some cases, the INAPI has calculated the term of duration of divisional applications based on the filing date of the divisional application, which caused the divisional application to have a validity date later than the corresponding parent application, which is not correct.

An amendment to the IP Law currently under preparation establishes that the term of protection of divisional patents should not exceed the term of the corresponding parent application.

Source: http://www.inapi.cl

[1]In Chile, any patent application that has been granted can be eligible for a term extension, when: i) the term of the prosecution of the patent application exceeded five years from the filing date to the granting date or of three years from the requirement for examination, whichever occurs after; ii) the term for the granting of the marketing authorization exceeded one year since the request was filed; and iii) the term extension is requested within six months after the granting of a patent (or after the granting of the authorization), as long as there has been an unjustified administrative delay in the granting of the patent or the granting of the marketing authorization.

Five people arrested for Intellectual Property Law infringement

By María Sol Porro

Five people were arrested for violating Intellectual Property Law in seven pubs and restaurants in Puerto Montt, a port city in southern Chile’s Lake District.They were arrested for illegally downloading and distributing movies and music.

The detectives in charge of the raid were from of the Economic Crimes Brigade, working with the Chilean Society of Phonographic and Videographic Producers, aka Profovi, who also carried out the seizure of various kinds of digital storage and notebooks.

The commissioner of the Investigative Brigade of Economic Crimes, Leonardo Flores, indicated that the items seized were valued at 30 million pesos (USD 51,000). The detainees, who were apprehended in flagrante delicto, were also warned according to Article 26 of the Criminal Procedure Code, pending the corresponding summons by the Public Prosecutor’s Office.

Undoubtedly, the issue of piracy of audiovisual content in Latin America is significant because it generates demotivation in the investment and development of projects for the production of films, documentaries and all kinds of audiovisual content. In addition, methods of piracy have become increasingly sophisticated, forcing the reinforcement of copyright protection to ensure that the creative community flourishes.

Source: http://noticias.bles.com/america/puerto-montt

Osorno Customs seizes counterfeit products

By Natalia Julia Rodríguez

Customs discovered export smuggling valued at USD 25,000 in Osorno, Chile.

The counterfeited products are from China and were detected in a truck when passing through the border crossing CardenalSamoré, Chile. The truck was coming from Santiago with final destination the City of Coyhaique.

The employers of the National Customs Service of Osorno seized the goods including a total of 429 packages containing clothing, toys and socks, as well as automotive items, all valued at USD 25, 000.

The driver could not provide the documents proving the legality of the cargo. The officials proceeded to inspect the truck, finding inside same the smuggled products.

Among the goods found, there were 39 packages of unbranded toys, 360 packages with a variety of different socks and another 30 with parkas, as well as four new truck tire rings 22.5, all of Chinese origin.

All the background and documentation of the products involved related to this case, is available for the authorities (Local Prosecutor of Osorno and the Investigation Police) in order to take the corresponding measures and legal actions.

Source: https://www.aduana.cl